Thursday, 17 March 2011

The present petition for review concerns decision T 147/09 revoking the European patent of the petitioner.

The patent as granted contained an independent claim 1 for a waterproofing process and an independent claim 20 for the semi-manufactured product. The patent was maintained by the opposition division (OD) in amended form with product claims 1 to 19 as granted and amended process claims 20 to 24. The opponent filed an appeal.

The patent proprietor requested that the patent be maintained as amended. It also filed four auxiliary requests, the first comprising an amended claim 1 and the other three each comprising an amended version of claim 20.

At the oral proceedings (OPs), the discussion only concerned product claim 20 in its different versions. In the course of the proceedings the patent proprietor filed a further version of product claim 20.

After this discussion but before the debate was formally closed, the Chairman read out the requests of the parties as follows:

“The appellant (opponent) requested that the decision under appeal be set aside and that the European patent No. 1 307 115 be revoked ... The respondent (patentee) requested that the appeal be dismissed and the patent be maintained in the amended form held allowable by the OD, or, in the alternative, that the patent be maintained on the basis of claim 1 and claim 20 according to any of the first, second and third auxiliary requests filed with the letter of 23 April 2010, or on the basis of the further amended claim 20 according to a fourth auxiliary request filed at the OPs before the Board”.

After deliberation of the Board of Appeal the decision was given that the patent was revoked. Immediately after, the patent proprietor objected that the Board had not considered its request for the maintenance of the patent based only on claims 1-19. Before closing the OPs, the Chairman dismissed this objection on the grounds that there was no identifiable request in the procedure which only contained the process claims and that the requests, which all included both the process and the product claims, had been read out prior to deliberation of the Board and the announcement of the final decision.

With letter dated 7 July 2010 the patent proprietor requested a correction of the minutes to indicate that only claim 20 in its different versions was discussed during the OPs and that its request should read that the patent be “... maintained on the basis of claim 20 according to any of the first, second ...”. The Board answered that this request for correction could not be granted since the requests as recorded in the minutes and read out before the Board took its final decision were correct.

The patent proprietor then filed a petition for review.

In what follows the Enlarged Board of appeal (EBA) discusses the allowability of the petition for review.

[5] As follows from the facts referred to above, the Board of Appeal, when taking the decision under review, had no doubts about the requests of the petitioner. The first question to be considered is whether this position was justified by the circumstances of the case.

[5.1] It is not contested by the petitioner that the Chairman of the Board of Appeal, before he declared the debate closed, read out the requests as recorded in the minutes [...]. As the petitioner pointed out, this did not mean that the claims in each request were thoroughly read one by one. Nevertheless, it is clear from the text as read out by the Chairman, that the requests contained a first, a second and a third auxiliary request filed with letter of 23 April 2010, each requesting the maintenance of the patent on the basis of a claim 1 and a claim 20, and a fourth auxiliary request concerning a further amended claim 20 filed at the OPs. As clearly follows from this text the Board of Appeal was not aware of a still further “first” auxiliary request limited to (process) claims 1 to 19 without (product) claim 20.

[5.2] The EBA cannot find fault with this view of the Board of Appeal. The petitioner’s arguments based on the letter of 23 April 2010 are not convincing in this respect. The auxiliary requests submitted with this letter were clearly marked as 1**(0), 2**(0) and 3**(0) auxiliary request, wherein the 1**(0) auxiliary request contained a (process) claim 1 and a (product) claim 20.

The established system of main and auxiliary requests in the proceedings before the EPO provides that parties, when filing alternative sets of claims must indicate the order of preference for each set of claims (see e.g. Legal advice from the EPO No 15/05 (rev. 2), OJ EPO 2005, 357). Contrary to the submissions of the petitioner, this normally rules out the understanding that a request of a certain order of preference could comprise alternative sets of claims. The latter is only possible in exceptional cases, as e.g. provided for in R 138.

Against this background, it would not have been reasonable for the Board of Appeal to conclude that claim 1 of the 1**(0) auxiliary request and claim 20 of the 1**(0) auxiliary request could belong to separate requests even if these claims were independent and filed on separate sheets.

[5.3] On the other hand, the indications in the letter of 23 April 2010 invoked by the petitioner [...] were not sufficient to express the petitioner’s intention to present claim 1 of the 1**(0) auxiliary request alone and in isolation from claim 20 of the 1**(0) auxiliary request.

In any case, the fact that the requests were read out at the end of the OPs for confirmation by the parties means that any previous requests were superseded (cf. point [6.1] below). It is to be emphasized in this respect that, according to the principle of party disposition (A113(2)), it is the applicant’s or patentee’s responsibility to define the subject-matter of the application or the patent. This responsibility cannot be shifted to the EPO or other parties to the proceedings (see e.g. T 382/96 [5.2]).

[5.4] The EBA therefore finds that, in the circumstances of the present case, the Board of Appeal correctly decided on the basis of the requests as read out at the end of the OPs.

[6] The petitioner further submitted that the Board of Appeal, if it had found anything in the requests to be unclear, would have had the duty to ask for clarification. Failing to do so in the case in suit was, in the petitioner’s eyes, a violation of R104(b) and misinterpreting a request constituted a substantial violation of A113(2).

[6.1] The EBA agrees with the petitioner that in cases where a request of a party is considered unclear, it is the duty of the deciding body to ask for clarification before deliberation. It is therefore not necessary to have this principle confirmed by a legal opinion as requested by the petitioner. However, as already set out, the Chairman of the Board of Appeal read out the requests of the parties, before declaring the debate closed (cf. point III(e) above). He thereby acted in conformity with Article 15(5) RPBA, the aim of which is to avoid ambiguities in the parties’ request. According to the established practice, the closing of the debate then marks the last moment in the OPs at which parties can still make submissions (see decision G 12/91 [3]).

Thus, if the requests as read out by the Chairman did not correspond to the petitioner’s intention, it was his duty to intervene at that point in the proceedings in order for the Board of Appeal to continue the debate on a subject-matter restricted to independent claim 1 as a further auxiliary request. From the fact that the petitioner did not do so, the Board of Appeal could conclude that the requests as read out corresponded to the intention of the petitioner. Any violation of A 113(2) or R 104(b) by the Board of Appeal cannot be acknowledged in this connection.

[6.2] The petitioner further argued that he could not know, and was therefore surprised, that the requests as read out would be interpreted as his final requests. However, the fact that the Chairman also read out the opponent’s request “that the decision under appeal be set aside and that the European patent No. 1 307 115 be revoked” [...] indicated beyond any reasonable doubt that, after the closure of the debate, the Board intended to deliberate on the patentability of independent claims 20 as discussed before and that, depending on the outcome of said deliberation, it could pronounce the revocation of the patent as a whole.

[6.3] Hence, for this very reason, the fact that after deliberation the Board of Appeal did not continue the OPs with a discussion of claim 1 of the first auxiliary request alone cannot be considered as a violation of A 113(1) or (2). There is no obligation under the EPC to carry out the examination of a European patent application or patent in its entirety, i.e. in respect of all pending claims if a claim considered unallowable was maintained and no auxiliary request relating to a set of claims not comprising this unallowable claim was submitted. In such a case the application or patent fails to meet a requirement of the EPC and is open to refusal or revocation (cf. T 228/89 [4.2] referring to T 5/81 [3]).

[6.4] From these reasons it follows that the Board of Appeal has not decided “infra petita” and that the condition set out in R 104(b) is not met. The petition for review is therefore clearly unallowable.

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